The withdrawal of the proceedings, even if with liberty to file afresh, does not obliterate the proceedings so filed, so as to make the same invisible even for drawing an inference of forum shopping therefrom. This was held in BLACK DIAMOND TRACK PARTS PRIVATE LIMITED AND ORS. V. BLACK DIAMOND MOTORS PRIVATE LIMITED [W.P.(C) 5229/2019] in the High Court of Delhi by a division bench consisting of JUSTICE RAJIV SAHAI ENDLAW And JUSTICE AMIT BANSAL.
Facts are that suit from which this appeal arises was filed by the respondent pleading that the respondent/plaintiff, since the year 2005, was carrying on with trademark ‘BLACK DIAMOND’ was being used by the family of the respondent. That in accordance with the family settlement, both parties agreed not to interfere or to compete in one another’s business and that neither party shall enter into the business of the other party under the Black Diamond formative/artistic/trade name/trademark/label. But both appellant and respondent have started the business with the same trademark. An appeal has been filed against the order of Commercial Court wherein interim injunction was granted to the respondent.
The counsel for the appellant submitted, that the earlier suit was withdrawn only for the reason that interim relief had been denied to the respondent/plaintiff. It is stated, that the interim relief was denied for the reason of the respondent/plaintiff had concealed material facts and the same reason prevailed with the High Court of Chhattisgarh also to dismiss the appeal preferred by the respondent/plaintiff against denial of interim relief.
The counsel for the respondents have submitted the senior counsel for the respondent/plaintiff contended, that Delhi is the capital, also of Intellectual Property Rights disputes and the lawyers and the Courts at Delhi deal with a large number of trademark cases and for this reason, the respondent/plaintiff chose to take a second chance at Delhi, rather than at Bilaspur.
The court made reference to the judgment of Apex court in Chhaganlal Pratapchand Vs. The state of Gujarat, wherein it was held that “a Government notification entitled the plaintiff in a suit dismissed for non-prosecution before settlement of issues, to refund of court fees and the question for adjudication was whether the plaintiff in a suit which was withdrawn with liberty to bring a fresh suit, under the said provision was also entitled to refund of court fees”.
The court also made reference to the judgment of the Apex court in Union of India Vs. Cipla Ltd., wherein it was observed that “A classic example of forum shopping is when a litigant approaches one Court for relief but does not get the desired relief and then approaches another Court for the same relief” and “Another form of forum shopping is taking advantage of a view held by a particular High Court in contrast to a different view held by FAO another High Court” and “Another category of forum shopping is approaching different Courts for the same relief by making a minor change in the prayer clause of the petition”.
Considering the facts of the case and the legal precedents, the court observed that, registration in favor of the respondent/plaintiff was not of a wordmark but of a label mark. The present is not a case of the appellants/defendants having used the trademark ‘BLACK DIAMOND’ with the permission of respondent/plaintiff; rather here the appellants/defendants were using the trademark ‘BLACK DIAMOND’ in their own right, including with respect to the subject goods. Thus quashing the interim injunction passed by the commercial court.